This long-pending action concerns the alleged infringement of a
patent on a ladder designed mainly for use in swimming pools. The
Court held a claim construction hearing on October 11, 2002, and
subsequently issued a memorandum opinion construing the patent
claim at issue. See Intex Recreation Corp. v. Metalast, S.A.,
245 F. Supp. 2d 65, 79 (D.D.C. 2003) ("Intex I"). In a
subsequent opinion, the Court entered summary judgment in favor
of Metalast on the issue of patent validity, entered summary
judgment in favor of Intex on the issue of literal infringement,
and permitted further briefing on Metalast's claim that Intex
infringed on Metalast's patent under the doctrine of equivalents.
Intex Recreation Corp. v. Metalast, S.A., slip op. (D.D.C. May
20, 2005) ("Intex II") (2005 WL 1214600). Presently before the
Court is Intex's motion for summary judgment on the final issue
remaining in this case  whether Intex's product infringes on
defendant's patent under the doctrine of equivalents. In
response, Metalast asks the Court to reconsider its decision on
the construction of the claim based on the intervening judicial
decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc), and also to revisit the issue of literal
infringement. After a careful review, the Court concludes that
its claim construction opinion is consistent with Phillips and
that Intex is entitled to summary judgment. BACKGROUND

The underlying facts of this case have been articulated at
length in the prior opinions and are repeated here only as
relevant to the issues now before the Court. Metalast, a Spanish
corporation, is the owner of U.S. Patent No. 5,547,041 ("the '041
patent") directed to the means for attachment of the steps of a
ladder to the vertical uprights. See '041 Patent Abstract
(Intex's Mem., Ex. 1).*fn1 A characteristic trait of the
ladder includes, inter alia, tubular apertures near the ends
of each rung defined by a sleeve for receiving the vertical
uprights. Id.

The issue of patent infringement turns on the meaning of the
phrase "uninterrupted inner surfaces"  a phrase used in Claim 1
of the '041 patent to describe the inner surfaces of the rung
sleeves.*fn2 On February 12, 2003, the Court entered a
decision stating that "the term `uninterrupted inner surfaces' in
the '041 patent shall be construed as meaning `smooth' or
`uniform' inner surfaces." Intex I, 245 F. Supp. 2d at 79. The Court explained
in detail that, in reaching this interpretation, the Court had
rejected the interpretation of "uninterrupted" as a "unitary"
one-piece rung sleeve  the competing interpretation advanced by
Metalast  and instead concluded that Intex's interpretation
focusing on the "smooth" or "uniform" character of the inner
surfaces was more consistent with the claim language, context,
drawings, dictionary definitions, and expert testimony. Id. at
71-73, 79. The Court thus construed the claim "uninterrupted"
inner surface as a surface "having no gaps, protrusions, or
recesses." Id. at 71, 72, 73. The pending arguments regarding
claim construction and infringement are presented in light of the
Court's construction of Claim 1.

STANDARD OF REVIEW

Summary judgment is appropriate when the pleadings and the
evidence demonstrate that "there is no genuine issue as to any
material fact and that the moving party is entitled to judgment
as a matter of law." Fed.R.Civ.P. 56(c)). The summary judgment
standard is applicable in patent cases, as it is in any other
case. See Desper Prods., Inc. v. QSound Labs, Inc.,
157 F.3d 1325, 1332 (Fed. Cir. 1998). The party seeking summary judgment
bears the initial responsibility of demonstrating the absence of
a genuine dispute of material fact. See Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). The moving party may
successfully support its motion by "informing the district court
of the basis for its motion, and identifying those portions of
`the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any,' which
it believes demonstrate the absence of a genuine issue of
material fact." Id. (quoting Fed.R.Civ.P. 56(c))). In determining whether there exists a genuine issue of material
fact sufficient to preclude summary judgment, the court must
regard the non-movant's statements as true and accept all
evidence and make all inferences in the non-movant's favor. See
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). A
non-moving party, however, must establish more than the "mere
existence of a scintilla of evidence" in support of its position.
Id. at 252. By pointing to the absence of evidence proffered by
the non-moving party, a moving party may succeed on summary
judgment. Celotex, 477 U.S. at 322. "If the evidence is merely
colorable, or is not significantly probative, summary judgment
may be granted." Anderson, 477 U.S. at 249-50 (internal
citations omitted). Summary judgment is appropriate if the
non-movant fails to offer "evidence on which the jury could
reasonably find for the [non-movant]." Id. at 252.

ANALYSIS

Intex asserts several grounds in support of its request for
summary judgment on the issue of infringement under the doctrine
of equivalents, including prosecution history estoppel, the rule
against vitiation of claim terms, and a showing on the merits
that the differences in the relevant ladder designs are not
insubstantial. Before addressing the doctrine of equivalents,
however, the Court first must address the threshold issue raised
by Metalast's response brief  whether this Court's earlier claim
construction decision should be reconsidered in light of the
recent Phillips decision from the en banc Federal Circuit.

Metalast contends that the Court's construction of
"uninterrupted inner surfaces" is based on an erroneous
"dictionary-based" methodology that has recently been rejected by
the Federal Circuit sitting en banc in Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005). Metalast's argument is based on the characterization of the claim
construction opinion as applying a "presumption" that the
dictionary definition of a term would govern in the absence of
"clear, explicit direction in the claim specification or
prosecution history." Metalast Mem. at 1. The Court agrees that
Phillips clarifies the law on the role of dictionary
definitions in the claim construction process. See
415 F.3d at 1312 ("We have also previously considered the use of dictionaries
in claim construction. What we have said in that regard requires
clarification."). Moreover, the Court believes that in so doing,
the Federal Circuit necessarily overruled those cases applying a
presumption that dictionary definitions govern unless refuted by
intrinsic evidence such as the claim specification and
prosecution history. However, this Court's claim construction
opinion is consistent with the principles articulated in
Phillips and assigns an appropriate secondary role to
dictionary definitions  that is, one of confirming a
construction of the claim derived in the first instance from the
claim language and patent specification. To the extent there is
any doubt about that, this opinion confirms that secondary role
for dictionary definitions.

In Phillips, the Federal Circuit discussed the differing
roles of intrinsic and extrinsic evidence, and reiterated the
continued validity of its prior precedent on claim construction 
particularly Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576 (Fed. Cir. 1996)  that focused first on the claim language
and the patent specification:

[T]he claims themselves provide substantial guidance
as to the meaning of particular claim terms. See
Vitronics, 90 F.3d at 1582; see also ACTV,
Inc. v. Walt Disney Co,, 346 F.3d 1082, 1088 (Fed.
Cir. 2003) ("the context of the surrounding words of
the claim also must be considered in determining the
ordinary and customary meaning of those terms").

. . . The claims, of course, do not stand alone. Rather,
they are part of "a fully integrated written
instrument," Markman, 52 F.3d at 978, consisting
principally of a specification that concludes with
the claims. For that reason, claims "must be read in
view of the specification, of which they are a part."
Id. at 979. As we stated in Vitronics, the
specification "is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed
term." 90 F.3d at 1582.

The Phillips court next discussed the importance of
prosecution history as intrinsic evidence that may inform the
meaning of claim language, but also noted the limitations of
prosecution history:

Like the specification, the prosecution history
provides evidence of how the PTO and the inventor
understood the patent. . . . Yet because the
prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the
final product of that negotiation, it often lacks the
clarity of the specification and thus is less useful
for claim construction purposes. . . . Nonetheless,
the prosecution history can often inform the meaning
of the claim language by demonstrating how the
inventor understood the invention and whether the
inventor limited the invention in the course of
prosecution. . . .

Phillips, 415 F.3d at 1317 (citations omitted).

The Federal Circuit then addressed the role of extrinsic
evidence  dictionaries, as well as other types (e.g., expert and
inventor testimony and treatises). Id. Extrinsic evidence
should only be considered "in the context of the intrinsic
evidence," but remains a permissible secondary aid in helping the
court determine what a person of ordinary skill in the art would
understand claim terms to mean. Id. at 1319. In this context,
the court reconsidered the precedent established by Texas
Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed.
Cir. 2002), the "leading case" in a series of cases establishing
a presumption in favor of dictionary definitions. Phillips, 415 F.3d at 1319. Under the Texas Digital approach,
the presumption could be overcome only where the patentee
explicitly set forth a different definition of the term or where
"the inventor has disavowed or disclaimed scope of coverage, by
using words or expressions of manifest exclusion or restriction."
Id. The Phillips court found a presumption in favor of
dictionary definitions to be inconsistent with its rulings that
"the specification is `the single best guide to the meaning of a
disputed term.'" Id. at 1321 (quoting Vitronics,
90 F.3d at 1582). The Federal Circuit further explained that:

The main problem with elevating the dictionary to
such prominence is that it focuses the inquiry on the
abstract meaning of words rather than on the meaning
of claim terms within the context of the patent.
Properly viewed, the "ordinary meaning" of a claim
term is its meaning to the ordinary artisan after
reading the entire patent. Yet heavy reliance on the
dictionary divorced from the intrinsic evidence risks
transforming the meaning of the claim term to the
artisan into the meaning of the term in the abstract,
out of its particular context, which is the
specification.

Id. at 1321. Although cautioning against giving undue weight to
dictionaries, the court emphasized that judges may, in their
discretion, make appropriate use of dictionaries within the
context of intrinsic evidence. Id. at 1322.

With this clarification by the Federal Circuit in mind, the
Court now turns to whether the Intex I claim construction
decision is consistent with the principles articulated in
Phillips, and in particular the secondary role assigned to
dictionaries. This Court concludes that no change in the claim
construction decision is warranted. The decision is properly
based primarily on the intrinsic evidence, and looked to
dictionary definitions to "buttress" that conclusion, consistent
with Phillips. Hence, although this Court's discussion of claim
construction post-Phillips would be somewhat different, the
result of the analysis does not change. The Court's claim construction decision began with a review of
the legal standards generally governing claim construction.
Although Metalast is correct that the decision recited the
presumption in favor of dictionary definitions from Texas
Digital, the decision placed significant reliance on the
principle that "courts `should look first to the intrinsic
evidence of record, i.e., the patent itself, including the
claims, the specification, and if in evidence, the prosecution
history.'" Intex I, 245 F. Supp. 2d at 68-69 (quoting
Vitronics, 90 F.3d at 1582) (emphasis added).

Thus, the first section of the Court's analysis looked only at
intrinsic evidence  that is, the claim language, the context of
the language, and the drawings accompanying the patent. The Court
first observed that the claim language, standing alone, favored
Intex's proposed construction of "smooth," although also noting
that Metalast's proposed meaning of "unitary" or one-piece was
not implausible. Id. at 71. The decision then analyzed the term
"in the context of the other language of Claim 1," which strongly
favored the construction of "smooth" for two reasons. Id.
First, the term "uninterrupted" applies to and modifies only
"inner surfaces," and not "sleeves." Id. This placement of the
words strongly suggests that "the surface of the sleeves must
be uninterrupted (and hence smooth), not that the sleeves must be
uninterrupted (and hence arguably unitary)." Id. (emphasis in
original). The decision further noted that "Metalast's position
ultimately is really that the ladder rungs (having sleeves at
each end) are to be unitary or one-piece," a construction "even
further from the actual words as used in the claim, in which
uninterrupted modifies surfaces, not sleeves, and certainly not
ladder rungs." Id. at 72.

The decision next looked at the phrase "for receiving
therethrough said rigid uprights" which immediately follows the
term "uninterrupted inner surfaces." Id. The Court found that
this phrase further supported the conclusion that "uninterrupted
inner surfaces" means "smooth" because smooth inner surfaces will "facilitate sliding the
uprights through them, whether or not the sleeves are unitary."
Id. A unitary or one-piece sleeve, it was noted, would fail to
serve this function if the sleeves have protrusions, gaps, or
recesses. Id. The Court found that additional language
throughout Claim 1 supported the interpretation of
"uninterrupted" as "smooth" or "uniform" based on the
differentiated language used to discuss the separate split
sleeve, which had a "split," a "recess," and a "protrusion."
Id.

The decision also relied on the drawings that are part of the
'041 patent as intrinsic evidence that further supported this
construction. Id. The Court explained that Figure 1, which
depicts the sleeve at the end of a rung, shows the "inner
surface" of the sleeve as smooth. Id. Furthermore, Figure 2, an
axial cut-out showing an elevational cross-section of the
attachment of the rung to the upright, depicts the inner surface
of the sleeve as smooth, but in contrast depicts the two parts of
the uprights with gaps, recesses, and protrusions. Id.

Based on this intrinsic evidence, the decision then stated that
"the Court concludes that the ordinary meaning of `uninterrupted
inner surfaces' to one skilled in the art is considerably more
likely to be `smooth' than unitary,' given the words employed,
their context, and the accompanying drawings." Id.

Only after this initial construction did the Court consider
dictionary definitions. Id. at 73. Although the Court again
acknowledged that pursuant to Texas Digital there was (at the
time) a presumption in favor of dictionary definitions, the Court
did not rely on that presumption to reach its construction.
Rather, as recounted in detail above, the Court relied on the
claim language and the drawings to reach the construction of
"uninterrupted" as "smooth" or "uniform," and then considered
whether the dictionary definitions were consistent with that
construction. This is reiterated in the final paragraph of the decision's
section on dictionary definitions, which states: "[T]he
dictionary definitions are more consistent with an interpretation
of `uninterrupted inner surfaces' as meaning `smooth or uniform',
and hence provide support for that construction as drawn, in the
first instance, from the claim language and context itself."
Id. at 74 (emphasis added).

The Court did give less weight to one type of intrinsic
evidence  the prosecution history  a point on which Metalast
now relies very heavily. The Court conducted a detailed review of
the prosecution history (aided by both sides' expert witness
assessments), focusing on changes Metalast made to the claims to
distinguish its ladder design from that granted to another
ladder, U.S. Patent 1,349,125 ("the Full patent"). Id. at
75-78; see also Patent File History at M00670-76 (Casano
Decl. Ex. B (filed Sept. 23, 2002) ("Patent File History")). The
Court concluded that "[t]he more persuasive reading of the
prosecution history may be that it focuses on distinguishing the
'041 patent from the Full patent in terms of simplicity of
construction and number of parts, but there is also a plausible
reading that it focuses on ease of sliding (i.e., smooth
surfaces without protrusions), which is likewise a simpler
construction." Id. at 78. The Court further explained that the
prosecution history was not dispositive because "[m]ore
importantly, [it] is subject to some inherent doubt given that it
was provided by a patent attorney attempting to overcome the
examiner's rejection, but who did not rely on the original
Spanish-language patent and cannot remember what he meant in any
event." Id. Giving lesser weight to prosecution history where
it is ambiguous is consistent with the recognition in Phillips
that prosecution history is important but may be "less useful for
claim construction purposes" in some circumstances. See
Phillips, 415 F.3d at 1317. Indeed, the circumstances in this
case are precisely the context  "an ongoing negotiation between the PTO
and the applicant"  that led the Phillips court to recognize
the need for caution in relying on prosecution history. See
id. Thus, the Court properly exercised its discretion to give
less weight to the prosecution history here.

Although some references to Texas Digital and similar cases
were made in declining to give greater weight to the prosecution
history over and above the "ordinary meaning" of the claim terms,
the Court's intent  as evidenced by the decision read in its
entirety  was to discount the prosecution history because of the
flaws described above. In addition, the "ordinary meaning" of the
claim terms, as used in that section of the decision, clearly
refers to the "ordinary meaning" discerned from the claim
language, context, and drawings, as buttressed by dictionary
definitions  not to the "ordinary" dictionary meaning alone.
See id. at 78-79.

In summarizing the claim construction outcome, the Court again
emphasized the paramount role of intrinsic evidence in
ascertaining the ordinary meaning of the term to one skilled in
the art of ladder design:

[The] ordinary meaning, based on the claim language,
context and drawings, as well as dictionary
definitions, and confirmed by the extrinsic evidence
of Ver Halen's expert testimony, is that
"uninterrupted inner surfaces" means smooth or
uniform inner surfaces of the sleeves located at the
ends of the ladder rungs of the '041 patent.

Id. at 79. Thus, based on this review of the claim construction
decision, as well as the patent and prosecution history, the
Court concludes that the methodology employed in the original
decision is consistent with the clarified framework set out in
Phillips because it relies primarily on intrinsic evidence to
construe the claim and assigns only a secondary role to
dictionary definitions and other extrinsic evidence. More importantly,
consideration and application of Phillips in this case does not
change the Court's claim construction determination.

II. Infringement under the Doctrine of Equivalents

Intex contends that it is entitled to summary judgment on the
issue of noninfringement under the doctrine of equivalents
because Metalast is estopped by the prosecution history from
asserting the doctrine. In the alternative, Intex contends that
recovery based on infringement by equivalents is not available to
Metalast because it would result in vitiation of a claim term
and, in any event, is not supported by the record because the
difference at issue (i.e., the grooved keyway) is not
insubstantial. The legal standards governing application of the
doctrine of equivalents were explained in Intex II, slip op. at
9-11, and are repeated here as necessary to address the parties'
arguments.

Under the doctrine of equivalents, a claim limitation not
literally met may nonetheless be infringed upon by an element of
the accused product based on equivalent identity of elements if
the differences between the two are "insubstantial to one of
ordinary skill in the art." Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1351 (Fed. Cir.
2003); see Warner-Jenkinson Co., Inc. v. Hilton Davis Chem.
Co., 520 U.S. 17, 39-40 (1997). "Each element contained in a
patent claim is deemed material to defining the scope of the
patented invention, and thus the doctrine of equivalents must be
applied to individual elements of the claim, not to the invention
as a whole." Warner-Jenkinson, 520 U.S. at 29. While no
particular linguistic framework controls the inquiry (id. at
40), the "insubstantial differences" inquiry may be guided by
determining "whether the element in the accused device performs
substantially the same function in substantially the same way to
obtain the same result as the claim limitation"  also referred to as the function-way-result test. Boehringer
Ingelheim Vetmedica, 320 F.3d at 1351 (internal citations and
quotations omitted).

Prosecution history estoppel, however, may preclude a
patentee's assertion of the doctrine of equivalents. Festo Corp.
v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 727
(2002). Estoppel ensures that when the patentee responds to a PTO
rejection of his application by narrowing his claims, the
prosecution history will estop him from later arguing that the
subject matter covered by the original broader claim was nothing
more than an equivalent to the patented claim. Id. In other
words, the patentee may not claim that the surrendered territory
should be deemed equivalent to the literal claims of the issued
patent. Id. at 733-34. Estoppel has been discussed most often
in the context of amendments made to avoid prior art. Id. at
735. However, any narrowing amendment made to satisfy any
requirement of the Patent Act may give rise to an estoppel with
respect to the amended claim limitation. Id. at 736.

The patentee bears the burden of establishing that an amendment
was not made for reasons related to patentability. Id. at 739.
"When the patentee is unable to explain the reason for amendment,
estoppel not only applies but also `bar[s] the application of the
doctrine of equivalents as to that element.'" Id. at 740
(quoting Warner-Jenkinson, 520 U.S. at 33). The patentee also
bears the burden of demonstrating that the amendment does not
surrender the particular equivalent in question; in the absence
of such a demonstration, a rebuttable presumption arises that
estoppel bars a finding of equivalence. Id. at 740-41. In
Festo, the Supreme Court explained that the presumption of
estoppel is rebuttable because "[t]here are some cases . . .
where the amendment cannot reasonably be viewed as surrendering a
particular equivalent," and described three such situations: "[1]
The equivalent may have been unforeseeable at the time of the application; [2] the rationale
underlying the amendment may bear no more than a tangential
relation to the equivalent in question; or [3] there may be some
other reason suggesting that the patentee could not reasonably be
expected to have described the insubstantial substitute in
question." Id. Whether the patentee has rebutted the
presumption of surrender is a question of law for the Court.
Biagro Western Sales, Inc. v. Grow More, Inc., 423 F.3d 1296,
1305 (Fed. Cir. 2005).

Intex contends that, as a threshold matter, Metalast is
estopped from asserting the doctrine of equivalents because it
relinquished the claim at issue during the patent application
process when it amended its claim to distinguish its ladder
design from the Full patent and thus satisfy Section 102(b) of
the Patent Act.*fn3 Metalast implicitly acknowledges, as it
did during the earlier briefing, that the presumption of
prosecution history estoppel applies in this case absent a
showing by Metalast that the presumption should be rebutted, and
the Court reaffirms here its prior conclusion that estoppel
applies. See Intex II, slip op. at 12-15. In relevant part,
the Court notes that, in response to Metalast's U.S. patent
application submitted on August 29, 1994,*fn4 the patent
examiner rejected the original versions of Claims 1 through 5
under 35 U.S.C. § 102(b), as being anticipated by the Full
patent. See PTO letter dated Sept. 11, 1995 (Patent File
History at M00666-67). Metalast then filed an amendment on
December 13, 1995 claiming that new prosecution claims 6 through
10 (which became claims 1 through 5 in the issued '041 patent) were patentable over the Full patent, based on a number of
distinctions, including rung "sleeves having uninterrupted inner
surfaces," which it characterized as contributing, with the other
aspects of its design, to simple construction, in contrast to the
more complex construction of the Full ladder.*fn5 Id. at
M00674. It is undisputed that the narrowing amendment was
undertaken to satisfy Section 102(b). Thus, a presumption of
prosecution history estoppel applies to Metalast's assertion of
the doctrine of equivalents.

The burden is on Metalast, then, to rebut the presumption of
estoppel. Festo, 535 U.S. at 739-40. However, Metalast has come
forward with nothing to rebut the presumption other than a
cross-reference to its previously rejected argument that the
amended claim language for "uninterrupted inner surfaces" bears
no more than a "tangential relation" to the equivalent in question (a rung sleeve having an inner surface with a grooved
keyway) because the purpose of the amendment was to claim a rung
sleeve "with fewer parts" and "without the need for bolting"  in
other words, a unitary one-piece rung sleeve. See Metalast Mem.
at 14-15 (incorporating by reference Metalast Mem. at 15-24,
filed Jan. 12, 2005). In Intex II, slip op. at 14-15, the Court
rejected Metalast's attempt to evade the claim construction of
"uninterrupted inner surfaces" as smooth or uniform (rather than
unitary or one-piece), and the Court adheres to that holding
here. To do otherwise would allow Metalast to claim as an
"equivalent" that which was rejected during the claim
construction. Indeed, application of prosecution history estoppel
is particularly appropriate in this case because, by amending the
claim language to specify sleeves with "uninterrupted inner
surfaces" (defined as "smooth" or "uniform," without gaps or
recesses), Intex necessarily surrendered a claim to ladder
designs with interrupted inner surfaces. Metalast has proffered
no other rebuttal to the presumption that estoppel applies, and
thus it is estopped from asserting the doctrine of equivalents.

Even if Metalast were not estopped, the Court finds, as a
matter of law, that Intex would be entitled to judgment on the
issue of infringement by equivalents. Intex contends that
infringement by equivalents cannot be found here because it would
result in vitiation of a claim term and because the change in its
accused ladder is not "insubstantial" to one of ordinary skill in
the art. It is well-settled that "an accused product or process
is not, as a matter of law, equivalent to a limitation of the
claimed invention if such a finding would entirely vitiate the
limitation." Freedman Seating Co. v. American Seating Co.,
420 F.3d 1350, 1358 (Fed. Cir. 2005) (citing Warner-Jenkinson,
520 U.S. at 29)); see Gaus v. Conair Corp., 363 F.3d 1284, 1291
(Fed. Cir. 2004) ("[a] particular structure can be deemed outside
the reach of the doctrine of equivalents because that structure is clearly excluded from the claims
whether the exclusion is express or implied") (quotations
omitted). To determine whether a finding of equivalence would
vitiate a claim limitation, "courts must consider the totality of
the circumstances of each case and determine whether the alleged
equivalent can be fairly characterized as an insubstantial change
from the claimed subject matter without rendering the pertinent
limitation meaningless." Freedman Seating, 420 F.3d at 1359. As
noted earlier, equivalence must be assessed "on a
limitation-by-limitation basis as opposed to from the perspective
of the invention as a whole." Id. at 1358.

Here, the claim at issue, "uninterrupted inner surfaces," has
been construed as "smooth" or "uniform," "without gaps,
protrusions, or recesses." Intex I, 245 F. Supp. 2d at 72. It
is undisputed that each sleeve of the accused Intex ladder has a
recessed groove (also called a keyway) cut into the inner surface
at a near ninety degree angle which runs vertically the length of
the sleeve. Declaration of Jon Ver Halen (filed July 22, 2005)
("Third Ver Halen Decl.) ¶ 7. The groove was approximately 1/8
inch wide in the ladders from the 2000 selling season, and
approximately 5/16 inch wide for those sold in the 2001 selling
season. Id. The function of the groove is to prevent rotational
movement, which is accomplished with another component called the
sleeve anchor. Id. ¶ 9. Thus, during the assembly process, when
the sleeve anchor is inserted over the uprights and inserted into
the step, the spline on the sleeve anchor ("sleeve anchor key")
must be correctly aligned with the grooved keyway in the aperture
in order for the sleeve anchor to slide into the aperture and
lock. Id.

An inner surface with a groove of this nature  one cut into
the inner surface at a near 90 degree angle  cannot be the
equivalent of an "uninterrupted inner surface" (as claimed in the '041 patent and construed by the Court) without rendering the
claim of "uninterrupted inner surfaces" meaningless because the
claim would then encompass inner surfaces that are broken up by
sudden gaps or recesses, which is expressly precluded by the
claim construction. Indeed, it would be difficult to imagine what
an "uninterrupted inner surface" would be if the claim did
encompass a surface with gaps or recesses. Such vitiation of
claim terms precludes a finding of infringement under the
doctrine of equivalents as a matter of law. See Asyst Tech.,
Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005)
(affirming summary judgment of noninfringement under doctrine of
equivalents where finding "unmounted" equivalent to "mounted"
would vitiate the claim term); Seachange Int'l, Inc. v. C-COR,
Inc., 413 F.3d 1361, 1378 (Fed. Cir. 2005) (holding that accused
product did not infringe as a matter of law where finding
"indirect" interconnections equivalent to "direct"
interconnections would vitiate the claim term). Furthermore, the
change cannot fairly be characterized as "insubstantial" to one
of ordinary skill in the art because it requires proper alignment
in order to allow the insertion of the sleeve anchor key into the
keyway to create a locking mechanism  a feature not present in
the '041 patent and which, in fact, adds an additional step in
the assembly of the product. Third Ver Halen Decl. ¶¶ 9, 12.

Instead of addressing the rule against vitiation of claim
elements, Metalast focuses on the purported irrelevance of
preventing rotational movement of the upright because, in
Metalast's view, other shapes  an oval or a pear  could prevent
rotational movement and still be considered to have
"uninterrupted inner surfaces." Metalast Mem. at 18-19. Those
questions, though interesting, fail to address the issue of gaps
and recesses presented by the accused product in this case. No
reasonable trier of fact could find that the gaps in the accused
ladder are an "insubstantial change" from the '041 patent without vitiating the
claim of "uninterrupted inner surfaces."

CONCLUSION

For the foregoing reasons, the Court denies Metalast's request
for reconsideration of the claim construction decision and grants
Intex's motion for summary judgment on noninfringement under the
doctrine of equivalents. These determinations, in conjunction
with the decisions rendered in Intex I and Intex II on claim
construction, literal infringement, and patent validity, result
in a final resolution of all of the claims for relief presented
by both parties in this matter. A separate order has been issued
on this date.

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